Must Examiners Now Cite the Specification to Support Broadest Reasonable Interpretation?

The Patent Trial & Appeal Board applied In Re: Smith Int’l to limit the broadest reasonable interpretation of claim language in Ex parte David Ben Yair (Appeal 2017-002190, decided Jan. 10, 2018).  In this case, the claim is directed toward a composite suit including “an inner suit” and “an outer suit,” and the prior art discloses a single article of clothing including an outer layer and an inner layer. The PTAB agreed with the appellant that, based on the specification of the appealed application, the claims required two pieces of clothing. Based on this interpretation the PTAB reversed the prior art rejection.

The relevant portion of the claim is as follows:

1. A composite suit for protection of a wearer’s body from heat, the composite suit comprising:

an inner suit adapted to be positioned on the wearer’s body and covering at least a substantial portion of the wearer’s body, the inner suit being short sleeved or sleeveless and extending in length to cover at least a portion of the lower portion of the wearer’s body;

an outer suit adapted to be positioned overlying said inner suit on the wearer’s body, the outer suit having sleeves and pant legs and adapted to surround the inner suit and substantially the wearer’s body…

Interestingly, the PTAB noted that the Examiner did not provide any support in the specification of the appealed application to support an interpretation that the “inner suit” and the “outer suit” could be components of a single article of clothing. Instead, the PTAB noted that the specification consistently described the “inner suit” and “outer suit” as separate components, and the PTAB reversed on that basis.

This type of analysis by the PTAB begs the question of whether examiners are now required to identify support in the specification for their interpretation of claim terms.  In any case, this decision is an example of a broad application of In re: Smith Int’l that could be useful when working with the examiners on BRI issues and when appealing based on an Examiner’s broad claim interpretation.

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